Cadbury loses colour purple mark in Court of Appeal

On October 4 2013 the Court of Appeal handed down its judgment in the case of Société des Produits Nestlé SA v Cadbury UK Limited ([2013] EWCA Civ 1174), with Sir John Mummery delivering the leading judgment. At issue was whether there was "a sign" registrable as a trademark in accordance with the requirements of Article 2 of the Trademarks Directive (2008/95/EC), as interpreted in the judgments of the Court of Justice of the European Union (ECJ).

On October 4 2013 the Court of Appeal handed down its judgment in the case of Société des Produits Nestlé SA v Cadbury UK Limited ([2013] EWCA Civ 1174), with Sir John Mummery delivering the leading judgment. At issue was whether there was "a sign" registrable as a trademark in accordance with the requirements of Article 2 of the Trademarks Directive (2008/95/EC), as interpreted in the judgments of the Court of Justice of the European Union (ECJ).

Cadbury had applied to register a trademark for the colour purple (Pantone 2685C) "applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods" for a range of chocolate-based goods in Class 30 of the Nice Classification.

Nestlé opposed the application, with the hearing officer finding that Cadbury was entitled to register the mark only in respect of goods for which there was evidence of acquired distinctiveness, namely chocolate in bar and tablet form; eating chocolate; drinking chocolate; preparations for making drinking chocolate.

Nestlé appealed against the decision of the hearing officer, submitting that the colour purple did not constitute a sign and nor was it capable of graphical representation. Therefore, it was not registrable under Article 2 of the directive. Article 2 contains three conditions:

1. It must be a sign;
2. That sign must be capable of being represented graphically; and
3. The sign must be capable of distinguishing the goods and services of one undertaking from those of other undertakings.

In October 2012 Judge Birss QC (as he then was) held that Cadbury was entitled to register the colour purple as a trademark in respect of its milk chocolate confectionary, although this could not extend to other types of chocolate or goods. Nestlé appealed to the Court of Appeal on the basis that the judge had made errors in relation to the requirements that a trademark be "a sign" and that it be "graphically represented", submitting that the mark applied for by Cadbury in this case did not fulfil those initial criteria.

The key points of the Court of Appeal's decision were as follows:

• Nestlé's appeal was allowed and the trial judge's decision allowing the registration of Cadbury's trademark for the colour purple was overturned.
• The hearing officer and the trial judge had erred in principle and had misinterpreted the verbal description of the graphic representation of the mark for which the application was made.
• The use of the word ‘predominant’ in the description opened the door to a multitude of different visual forms as a result of its implied reference to other colours not described in the application. The Libertel case (as heavily relied upon by the trial judge) was distinguished as Cadbury's application covered the registration of a shade of colour “plus” other material, not of just of an unchanging application of a single colour, as in Libertel.
• The Court of Appeal found that the description, properly interpreted, did not constitute “a sign” that is “graphically represented” within Article 2. If the colour as claimed is only “predominant”, the application would cover other matter in combination with the colour, which is not graphically represented or verbally described in the precise manner required. In effect, this approach would allow the registration of multiple signs with different permutations, which are neither graphically represented nor described with any certainty or precision.
• To allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. Further, it would also "offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage".
• The Court of Appeal declined to make a reference to the ECJ on this point (which had been argued by Cadbury's counsel), finding that the interpretation of Article 2 had already been expounded in sufficient clarity and detail to enable the court to decide the appeal without troubling the ECJ.

Business impact:

• Protection for specific colours, if distinctive of the brand owner's product or service, is still available, but applications will be scrutinised hard, to check that they are not overly broad or overreach the proper scope of protection.
• Brand owners should avoid use of the word ‘predominant’ in trademark applications for colours. In providing an assenting judgment, Sir Timothy Lloyd suggested that a better description may have been to describe the colour as applied "to more than 50% of the visible surface area".
• Precision is vital in the drafting of trademark applications and brand owners should ensure that the graphic representation of trademarks is clear and precise.

Joel Smith and Sarah Burke, Herbert Smith Freehills LLP, London